When Facebook allowed users to customise web addresses to
include their name after the domain name Facebook.com it said that
it was putting protections in place to ensure that trade marks were
not used in URLs registered by people who did not own the trade
marks.
It set up a process by which companies could pre-register their
trade marks to stop other people using URLs which were made up of
the trade marks.
Facebook has now written to companies who pre-registered,
though, and told them that they cannot protect their intellectual
property rights unless they put their firms on Facebook.
"When a username is requested for business or promotional needs,
we require it to be associated with a Facebook Page," said an email
sent to those who had tried to use the system.
"If you have a Page to claim this username, please provide us
with the web address (URL) and we will review your request. If you
do not already have a Page, simply click on the 'Create a page'
link under the Sign Up section of www.facebook.com," it said.
The policy raises the possibility that companies which thought
they had protected their brands from Facebook cybersquatting may
now lose that protection.
OUT-LAW.COM asked Facebook if trade marks pre-registered by
companies that did not want a Facebook presence would become
available for registration by third parties, but the company did
not provide an answer.
OUT-LAW.COM also asked Facebook if the supposed trade mark
protection strategy was in fact a marketing exercise designed to
encourage companies to register a Facebook presence, but the
company declined to respond. It pointed instead to the 'frequently
asked questions' page related to the URL policy.
When announcing the personalised URLs, Facebook said that it
wanted to protect its users against conflict with all intellectual
property owners, not just those with Facebook pages.
"[We want] to help our users avoid potential disputes concerning
usernames that may be protected by intellectual property rights,"
said a company explanation of its actions at the time. "In order to
do that, we have encouraged rights owners to contact us if they
want to reserve/protect certain names."
John
MacKenzie, an intellectual property specialist at Pinsent
Masons, the law firm behind 0UT-LAW.COM, said that the policy will
not help those companies which choose to stay off Facebook.
"This would appear to be brand protection, but with a catch," he
said. "Unless brands have a clear social networking strategy they
will not want to incur the time and cost associated with
maintaining a Facebook page."
"What we need is some clarity as to the protection actually
offered and the conditions attached," he said.
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